Uncommon, LLC v. Spigen, Inc.

• Citation: 305 F.Supp.3d 825
• Decision Date: 26 March 2018
• Docket Number: Case No. 15–cv–10897
• Parties: UNCOMMON, LLC, Plaintiff, v. SPIGEN, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

305 F.Supp.3d 825

UNCOMMON, LLC, Plaintiff,

v.SPIGEN, INC., Defendant.

Case No. 15–cv–10897

United States District Court, N.D. Illinois, Eastern Division.

Signed March 26, 2018

Edward L. Bishop, Benjamin Adam Campbell, Nicholas S. Lee, Stephanie Nicole White, Bishop Diehl & Lee, Ltd., Schaumburg, IL, for Plaintiff.

Heedong Chae, Lucem PC, Los Angeles, CA, Karl W. Roth, William P. Foley, Roth Law Group LLC, Chicago, IL, for Defendant.

MEMORANDUM OPINION AND ORDER

John Robert Blakey, United States District Judge

Plaintiff Uncommon, LLC sued Defendant Spigen, Inc. for using the trademarked term "Capsule" in the names of its cell phone cases, the same product that Plaintiff sells under the Capsule mark. Plaintiff brings claims for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), and unfair competition under Illinois common law. [1]. Defendant asserts counterclaims seeking cancellation of Plaintiff's Capsule mark for genericness and descriptiveness. [47]. Before this Court are Plaintiff's motion to strike Defendant's expert report [104]; Defendant's motion to strike Plaintiff's expert report [107]; Plaintiff's motion to strike an affidavit from Defendant's nontestifying expert [177]; Defendant's motion to withdraw answers to Plaintiff's requests for admission [180]; and the parties' cross-motions for summary judgment [123, 147].

As explained below, this Court denies the parties' motions to strike; partially grants and partially denies Defendant's motion to withdraw answers; and partially grants and partially denies the parties' motions for summary judgment.

I. Background

A. Disputed Facts

The facts in this section come primarily from Defendant's Local Rule 56.1 statement of facts [124] and Plaintiff's Local Rule 56.1 statement of facts [149].¹

The parties disagree over many of the circumstances of this case and each filed extensive responses to the other's statement of facts, [152, 157], and statement of additional facts, [169, 171]. Simply denying a fact that has evidentiary support "does not transform it into a disputed issue of fact sufficient to survive a motion for summary judgment." Roberts v. Advocate Health Care , 119 F.Supp.3d 852, 854 (N.D. Ill. 2015). Denials "must cite specific evidentiary materials justifying the denial" or be disregarded. Malec v. Sanford , 191 F.R.D. 581, 584 (N.D. Ill. 2000). Further, responses to the opposing party's statement of facts are not the place for "purely argumentative details," id. , or legal conclusions, Cady v. Sheahan , 467 F.3d 1057, 1060 (7th Cir. 2006). District courts may disregard any improper denials. See id. ; Ammons v. Aramark Unif. Servs. , 368 F.3d 809, 817 (7th Cir. 2004).

Plaintiff argues in its reply brief on its motion for summary judgment that many of Defendant's responses to Plaintiff's statement of facts should be disregarded. [168] at 7. But Plaintiff waived this argument by failing to raise it before the reply brief. See, e.g. , Padula v. Leimbach , 656 F.3d 595, 605 (7th Cir. 2011). Even so, this Court retains discretion to enforce Local Rule 56.1. See Ammons , 368 F.3d at 817. To the extent that Defendant's responses fail to cite specific evidence in the record, this Court will disregard them and deem Plaintiff's statement of fact to be admitted. See Malec , 191 F.R.D. at 583–84.

The majority of responses that Plaintiff challenges sufficiently conform to Local Rule 56.1 to remain in the record. In most responses Defendant admits the statement in part and disputes the remainder either by citing to the record or re-citing the portion of the record relied upon by Plaintiff. In some responses, Defendant limited its reply because it objected to the form of Plaintiff's statement as containing improper legal argument or as unsupported by the evidence. This Court considers this to be the case with respect to Defendant's responses to paragraphs 1–3, 5, 7–10, 15, 16–18, 20, 21, 26, 29–37, and 39–42, and declines to strike those responses. In a few instances, however, Defendant failed to cite to any record evidence: this is true of its responses to paragraphs 6, 14, 23, 25, 28, and 38 of Plaintiff's statement of facts. This Court disregards those denials and considers Plaintiff's corresponding statements admitted. Malec , 191 F.R.D. at 583–84.²

B. This Case

The parties make and sell cell phone cases. PSOF ¶¶ 5, 6. Plaintiff sells a number of case models that consumers can customize with their own images, as well as "ready-made" varieties available with mass-produced designs or licensed artwork. DSOF ¶ 42; R. DSOF ¶ 40.

In September 2012, Plaintiff applied to register the name "Capsule" as a trademark for one of its lines of cases. PSOF ¶ 4. The Capsule mark issued in May 2013 as Trademark Registration No. 4,338,254, for "cases specifically adapted for protection and storage of consumer electronics, namely, cellular phones and mobile media players." Id. ; [149–3]. The mark's registration lists its "first use" and "in commerce" dates as December 16, 2009. [149–3]. Its registration date is May 21, 2013. Id. Plaintiff sold its first Capsule case in July 2010, and has continuously sold cell phone cases with the mark since that date. DSOF ¶ 32; PSOF ¶ 5.

When Plaintiff registered its mark, it appears that another company, Vatra, Inc., had registered "Capsule" as a trademark for "bags and cases" for "holding or carrying" cell phones, cameras, glasses, and other accessories. [124–8] at 6. Vatra, however, never followed up on its initial registration by providing a certificate of "continued use or excusable non-use," which must be submitted to the U.S. Patent and Trademark Office (USPTO) between the fifth and sixth year after registration to maintain a valid trademark. See id. at 5. In any event, the USPTO cancelled Vatra's Capsule mark in February 2015 for lack of that certificate, id. at 3, and it did not flag Vatra's mark as a potential source of confusion when Plaintiff applied for its Capsule mark, DSOF ¶ 13; [149–3].

There are, however, additional third-party suppliers that sell cases whose names contain the term "Capsule," including Accez, iPhone TPU, Jammylizard, Catalyst, and others. See [124–10]. Plaintiff's own exhibit of online search results for "capsule," submitted with its Complaint, shows that case producers (other than the parties here) use the term. [1–6]; [124–9] at 8.³ Such third-party use of Capsule, even in relation to cell phone cases, did not affect Plaintiff's registration of its mark with the USPTO.

Around 2010, Defendant also began selling cell phone cases with the name "Capsule." PSOF ¶ 6. These cases sometimes, but not always, used capsule with other modifiers; for example, Defendant's products include "Air Capsule," "Capsule Solid," and "Capsule Capella." Id. ¶¶ 6, 9; DSOF ¶¶ 53, 54. By November 2014, Defendant had submitted registration applications to the USPTO to trademark these "Capsule family" product names. PSOF ¶¶ 6, 12. At least one of these marks—Capsule Capella—was approved and registered with the USPTO in May 2017. [124–4] at 4; CAPSULE CAPELLA, Registration No. 5,297,564.⁴ Although the Capsule Capella mark was originally rejected by the USPTO for likelihood of confusion, the objection was withdrawn upon review. [124–4] at 6. The registration for Capsule Capella includes the disclaimer that Defendant makes no claim to the "exclusive right to use ‘Capsule’ apart from" its appearance in the mark as shown. CAPSULE CAPELLA, Registration No. 5,297,564. Defendant's "Rugged Capsule" mark was also initially rejected, both for likelihood of confusion and because the USPTO determined that the mark was "merely descriptive" of an attribute of the Defendant's case. [124–6] at 16–17. Defendant still sells its "Capsule family" cases, on its website and through online retailers such as Amazon and eBay. PSOF ¶ 11.

Defendant also claims that it sold a "Capsule" cell phone accessory in June 2009, predating Plaintiff's first use of the Capsule mark. See R. DSOF ¶ 22; [124–11]. This product was the "SGP Metal Advance Light," which came in a variety of styles, including "Capsule Nickel" and "Capsule Gold." See PSOF ¶ 25; [124–11]. The SGP Metal Advance, however, was a cell phone "skin," a decorative sticker for the front of a phone. PSOF ¶¶ 26–28; [150–5]. It was not a cell phone case. In any event, this use of "capsule" merely described one of the designs in which the sticker was available—specifically, the option to have the sticker in a gold or nickel color with a pattern of repeating medicine capsules. See [124–11, 149–26]. Thus, "capsule" as Defendant used it in 2009 described a decorative pattern by naming the objects in the pattern, and was not a product identifier. It has little relevance here.⁵

Thus, the disputed products consist of Plaintiff's Capsule cell phone cases and Defendant's "Capsule family" cases. Both parties sell their Capsule cases online, through their websites and online retailers. PSOF ¶ 14; [1–6]; [124–28]; [124–34]. Both have a national market. PSOF ¶¶ 13, 14. Both parties use the trademarked term alone and in conjunction with the word "case." [149–11]; [149–19]; [124–12]; [124–28]; R. DSOF ¶ 20; DSAF ¶ 4. Defendant, as noted, also uses the term with other descriptors, and has trademarked at least one of the resulting phrases. See [124–4]; DSAF ¶ 6. The Capsule marks for which Defendant has sought or is seeking registration have first-use dates no earlier than February 2015. DSAF ¶ 6. Defendant briefly ceased selling its Capsule family cases during the pendency of this litigation but has resumed its sales. PSOF ¶ 38.

Although both parties currently sell Capsule cases, Plaintiff does not sell its Capsule models for iPhones after the 5/5s generation, with the exception of the iPhone SE. PSOF ¶ 5; R. DSOF ¶¶ 43, 44. The trademarked Capsule models are limited to cases for the iPhone 5/5s, iPhone SE, iPhone 4/4s, and the fourth generation iPod Touch. R. DSOF ¶ 43. Plaintiff's cases for...